Ex Parte Singer et al

Patent Trial and Appeal BoardApr 11, 2016

12752570 (P.T.A.B. Apr. 11, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/752,570 04/01/2010 Debra L. Singer 09006462A2 2734 7590 04/11/2016 Intellectual Property Law Department PPG Industries, Inc. One PPG Place - 39th Floor Pittsburgh, PA 15272 EXAMINER JONES JR., ROBERT STOCKTON ART UNIT PAPER NUMBER 1762 MAIL DATE DELIVERY MODE 04/11/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DEBRA L. SINGER, DENNIS A SIMPSON, JOHN M. DUDIK, ANTHONY M. CHASSER, KAM LUN LOCK, RICHARD WOODS, and NIGEL FRANCIS MASTERS1 ____________ Appeal 2014-002483 Application 12/752,570 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, CHRISTOPHER M. KAISER, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–8, 10, 12–15, 17, 18, and 21–23. An oral hearing was held on March 29, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is PPG Industries Ohio, Inc. App. Br. 1. Appeal 2014-002483 Application 12/752,570 2 BACKGROUND The subject matter on appeal relates to branched polyesters prepared by free radical polymerization of the double bonds of an unsaturated polyester prepolymer. Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from page 8 (Claims Appendix) of the Appeal Brief: 1. A crosslinkable branched polyester polymer prepared by free radical polymerization of a double bond of a first unsaturated polyester prepolymer with a double bond of a second unsaturated polyester prepolymer, wherein each prepolymer independently comprises: a) a hard segment; b) a polyol segment; and c) an unsaturated polycarboxylic acid and/or an anhydride and/or ester thereof. EVIDENCE RELIED ON BY THE EXAMINER Misev et al. (“Misev ’099) US 5,763,099 June 9, 1998 Barrio US 6,214,898 B1 Apr. 10, 2001 Koenraadt et al. US 6,812,269 B2 Nov. 2, 2004 T.A. Misev et al., Powder coatings technology: new developments at the turn of the century, 34 Progress in Organic Coatings 160 (1998) (“Misev ’98”) REJECTIONS ON APPEAL 1. Claims 1–3, 5–7, 10–15, 17, 18, and 21 are rejected under 35 U.S.C. § 102(b) as anticipated by Barrio. 2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Barrio. 3. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Barrio, further in view of Misev ’099. Appeal 2014-002483 Application 12/752,570 3 4. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over Barrio, further in view of Misev ’98. 5. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over Barrio, further in view of Koenraadt. ANALYSIS The Appellants argue the claims subject to Rejection 1 as a group. We select claim 1 as representative, and the remaining claims subject to Rejection 1 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Appellants present no separate arguments for the claims subject to Rejections 2–4, which depend (directly or indirectly) from claim 1. Therefore, those claims will likewise stand or fall with claim 1. The Appellants present a separate argument for claim 23, which is subject to Rejection 5. Accordingly, we limit our discussion to claims 1 and 23. After review of the cited evidence in the appeal briefs and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner’s rejections. Accordingly, we sustain the rejections for reasons set forth by the Examiner in the Answer. See generally Ans. 2–17. We add the following for emphasis and completeness. A. Claim 1 The Examiner finds, inter alia, that Barrio teaches a crosslinkable branched polyester polymer prepared by “a process identical to that described in the instant specification.” Ans. 2–4. Concerning whether Barrio’s polymer is “crosslinkable,” the Examiner finds that “Barrio’s product is expected to be identical in structure to the claimed product, and Appeal 2014-002483 Application 12/752,570 4 will therefore be crosslinkable.” Id. at 3. Alternatively, the Examiner finds that a person of ordinary skill in the art would have understood Barrio’s polymer to be crosslinkable because it possesses terminal hydroxyl or carboxyl functional groups, “which permit a dual crosslinking.” Id. at 3–4. The Appellants argue that Barrio’s polymer is not “crosslinkable” because it is already crosslinked or cured. See App. Br. 3–4; Reply Br. 2–3. The Appellants allege, by contrast, that after the free radical polymerization of claim 1, “the resulting polyester polymer . . . retains functionality that can be further crosslinked.” App. Br. 3–4. At the outset, we note that claim 1 is a product-by-process claim. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). In this case, the Appellants do not meaningfully dispute the Examiner’s repeated finding that the processes of Barrio and claim 1 are identical. E.g., Ans. 3, 4, 10, 13, 14. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). The Appellants have not identified a patentable distinction between the claimed crosslinkable branched polyester polymers and the polyester Appeal 2014-002483 Application 12/752,570 5 polymers of Barrio. While the Appellants insist that Barrio teaches cured polymers that are already crosslinked, they provide no persuasive explanation as to how their polymers, made by an identical process, differ structurally from those of Barrio. As the Examiner explains, Ans. 4, the Appellants’ Specification teaches that the polyester polymers are formed by free radical polymerization and that “the terminal hydroxyl groups will remain unreacted in the polyester of the present invention. . . . [and] can then be crosslinked with another component,” Spec. ¶ 23. Barrio likewise teaches free radical polymerization resulting in a polymer having “terminal hydroxyl or carboxyl functions, which . . . likewise permit a dual crosslinking” when combined with another component. Barrio at 3:36–43. Thus, the processes and resulting products of claim 1 and Barrio appear to be the same. The Appellants’ assertion that “crosslinking across the double bonds and crosslinking through any functionality [i.e., terminal hydroxyl groups] that may be on the polyester occurs at the same time” in Barrio, App. Br. 4, and their reliance on Barrio’s teaching that “[t]he application should be finished off in all cases by the corresponding polymerization of the coating . . . ,” Reply Br. 2, do not persuade us otherwise. As the Examiner explains, while Barrio describes dual crosslinking, Barrio’s provided example “does not include an additional crosslinking agent” that would be required to crosslink the terminal hydroxyl and carboxyl groups, see Barrio at 3:39–43 (reciting potential crosslinking agents); Spec. ¶¶ 33–34 (reciting “suitable crosslinkers,” many of which overlap those disclosed by Barrio), and therefore would result in a polymer in which free radical polymerization has occurred, but terminal hydroxyl and/or carboxyl groups remain. Ans. 12 Appeal 2014-002483 Application 12/752,570 6 (citing Barrio cols. 5–6). Therefore, “further crosslinking [would be] possible.” Ans. 12. Regardless of whether Barrio’s polymer is considered to be “cured” after free radical polymerization, the Appellants provide no basis to reject the Examiner’s finding that at least some terminal hydroxyl and/or carboxyl groups would remain, and that those groups could be further crosslinked. See Reply Br. 3. The Appellants’ assertion that Barrio’s “reaction product cannot be further crosslinked,” id., is contrary to the teachings of Barrio, and the Appellants’ argument fails to identify any structural difference between Barrio’s free radical polymerization product and the claimed product. As the Examiner explains, Ans. 13, the Appellants’ focus on the word “cured” appears to be a semantic dispute that fails to identify a structural difference that might overcome the Examiner’s rejection. For those reasons, we affirm the Examiner’s rejection of claim 1. B. Claim 23 Claim 23 depends from claim 12. Both claims are reproduced below from the Claims Appendix of the Appeal Brief: 12. A coating comprising the polyester polymer of claim one and a crosslinker therefor. 23. The coating of claim 12, wherein said coating is a liquid coating. As noted above, the Appellants do not present separate arguments for claim 12; it therefore falls with claim 1. The issue before us is whether it would have been obvious to a person of ordinary skill in the art to provide the coating of Barrio, which meets the limitations of claim 12, in liquid form. Appeal 2014-002483 Application 12/752,570 7 The Examiner finds that Barrio does not teach a coating in the form of a liquid, but that Koenraadt teaches several benefits to using coatings such as those of Barrio in liquid form. See Ans. 9. The Examiner concludes that preparing Barrio’s coating as a liquid would have been obvious because it results “in a number of benefits such as eliminating dust formation; use of smaller particle sizes for more even coatings; application with common equipment rather than specialized electrostatic spray guns or fluidized bed technology; increased formulation flexibility; and easier filtration/purification.” Id. at 10. The Appellants argue that “[p]owder coating technology and liquid coating technology can be quite distinct, and are not necessarily interchangeable. Indeed, there is no guarantee that a powder coating could be put into an aqueous dispersion and successfully work as a coating.” App. Br. 6. We are not persuaded by that argument. An obviousness rejection does not require a “guarantee” of success; it requires only a reasonable expectation of success. In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success. . . . all that is required is a reasonable expectation of success.”). The references here provide that. The Appellants do not dispute any of the Examiner’s findings concerning Koenraadt, nor do they provide any basis to reject the Examiner’s finding that Koenraadt’s teachings would apply to the coatings of Barrio. The Appellants’ argument that Barrio provides no motivation to prepare liquid coatings, see App. Br. 6, is unpersuasive because, as explained above, the Examiner relies on Koenraadt to supply the motivation Appeal 2014-002483 Application 12/752,570 8 to prepare liquid coatings from powders such as that of Barrio. Cf. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). Based on the arguments presented, we are not persuaded of reversible error in the Examiner’s rejection of claim 23. CONCLUSION We AFFIRM the Examiner’s rejection of claims 1–8, 10, 12–15, 17, 18, and 21–23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED